WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sanofi v. Svetlana Guseva

Case No. D2019-2815

1. The Parties

The Complainant is Sanofi, France, represented by Selarl Marchais & Associés, France.

The Respondent is Svetlana Guseva, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <sanofi.space> is registered with REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2019. On November 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 21, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 22, 2019.

On November 21, 2019, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On November 25, 2019, the Complainant filed its request that English be the language of the proceedings. The Respondent has not provided any response regarding the language of the Proceedings.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.

The Center appointed Taras Kyslyy as the sole panelist in this matter on January 8, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a multinational pharmaceutical company settled in more than 100 countries, headquartered in France and employing about 100,000 people. The Complainant holds numerous registrations of its SANOFI trademark in various countries throughout the world, including for instance international trademark registration No. 674936 registered on June 17, 1997.

The Complainant also holds and uses various domain names featuring SANOFI trademark, for instance <sanofi.com>.

The disputed domain name was registered on September 11, 2019 and does not resolve into any active website.

On October 31, 2019 the Complainant addressed the Respondent with a cease and desist letter in English, which was never answered by the Respondent.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name reproduces the highly distinctive Complainant’s trademark. The Complainant has intensively used and invested in its SANOFI trademark and tradename for over 40 years. The disputed domain name is identical or confusingly similar to the Complainant’s trademark regardless of the generic top-level domain (the “gTLD”) extension <.space>. The likelihood of confusion is ascertained by the Complainant’s goodwill in SANOFI mark and its well-known status.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has neither prior right nor legitimate interest to justify the use of the already well-known and worldwide trademarks and domain names of the Complainant. The Complainant has never licensed or otherwise authorized the Respondent to use its trademark or to register any domain name including the Complainant’s trademark. The Respondent is not making a legitimate noncommercial or fair use of the domain name nor is she using the litigious domain name in connection with a bona fide offering of goods or services, so as to confer a right or legitimate interest in it. The Respondent has therefore clearly adopted the Complainant’s trademark and domain name for its own use and reproduced them into her domain name in order to confuse Internet users into believing the Respondent is linked to the Complainant, which in any case does not constitute a bona fide offering of goods and services.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is a well-known mark which the Complainant used and registered many years before the Respondent registered the disputed domain name. The Respondent had both constructive and actual knowledge of the Complainant’s mark and chose nevertheless to exploit it and the goodwill developed in it. The Respondent has neither prior right nor legitimate interest to justify the registration or use of the already well-known and worldwide trademark and domain names of the Complainant. The absence of the legitimate interest somewhat induces that of good faith. The Respondent acted with opportunistic bad faith in registering the disputed domain name in order to make an illegitimate use of it. The disputed domain name has been registered for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion – or at least an impression of association – between the Complainant’s trademark and domain names and the disputed domain name. Passive holding of the disputed domain name under the circumstances of this dispute falls within the concept of the domain name being used in bad faith. The lack of use of the disputed domain name particularly close to those used by the Complainant is likely to cause irreparable prejudice to their general goodwill because Internet users could be led to believe that the Complainant is not on the Internet or worse that the Complainant is out of business. The Respondent ignored the Complainant’s cease and desist letter, which confirms the bad faith.

For the above reasons the Complainant requests that the disputed domain name is cancelled.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant makes the following submissions (i) the Complainant’s international business is primarily operated in English, the Complainant owns trademark registrations designating Russian Federation and <sanofi.ru> domain name (since 2007), (ii) the disputed domain name consists of an arbitrary word “sanofi” and gTLD “.space”, which is an English term, (iii) the disputed domain name is comprised of Latin characters, (iv) translation of the Complaint would delay the case review and involve substantial expenses, (v) the Respondent selected a Registrar with its name incorporating the English acronyms “reg”, “ru” and “llc”,

The Panel also notes that the Complainant addressed the Respondent with cease and desist letter in English. The Respondent did not reply, neither to comment on the issues raised in the letter, nor to state that she does not understand the content. Under such circumstances previous Panels accepted the language of the proceeding to be English (see, e.g., LEGO Juris A/S v. Satoru Nakamura, WIPO Case No. D2012-0682).

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.

The Panel also notes that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking into account the above, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards TLD “.space” for the purposes of the confusing similarity test in the present case.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel notes that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Panel finds that the Complainant has rights in its registered trademarks.

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The Respondent has no right or legitimate interests in the disputed domain name resolving to an inactive website (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s priory registered and famous Complainant’s trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in France and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.

The Respondent ignored its possibility to comment on the contrary and provide any explanations to prove its good faith while registering and using the disputed domain name.

According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the failure of the Respondent to address the Complainant’s cease and desist letter, (iv) the Respondent’s concealing its identity while registering the disputed domain name, and (v) the implausibility of any good faith use to which the disputed domain name may be put.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sanofi.space> be cancelled, as requested in the Complaint.

Taras Kyslyy
Sole Panelist
Date: January 21, 2020